ACT 571669/2023

—·EP3498115B1

Case details: Status
—
Action
Revocation
Category
Main Revocation Action
Parties: Claimants
NJOY Netherlands B.V.
Reps: Hon.-Prof. Dr. Henrik Holzapfel (McDermott Will & Schulte); Mathias Karlhuber (Cohausz & Florack)
Respondents
Juul Labs International, Inc.
Reps: Bernhard Thum (Thum & Partner / Thum, Mötsch, Weickert Patentanwälte PartG mbB); Tobias Wuttke (Bardehle Pagenberg); Tilman Müller (Bardehle Pagenberg)
Division: Paris CD
Judges: Maximilian Haedicke · Presiding Judge / Judge-Rapporteur
Technology: Consumer Goods · E-Cigarettes
Language: —
First decided: Nov 5, 2024

Claims

At issueall

Revokedall

Notes: EP 3 498 115 B1 revoked in full for added matter; all auxiliary amendment requests rejected.

Decisions

2024-11-05
RevokedRevocation meritsRevocation Action
Paris Central Division (Section 1) revoked European Patent EP 3 498 115 B1 (Juul Labs - vaping device cartridge) in full, with effect for Austria, Belgium, Denmark, Finland, France, Germany, Italy, Latvia, Luxembourg, Netherlands, Portugal and Sweden. The Court found the patent invalid for added matter (Art. 138(1)(c) / Art. 123(2) EPC). All of Juul Labs' auxiliary requests to amend the patent were rejected. Juul Labs ordered to bear costs.
Legal issues:Revocation for added matter (Art. 123(2) EPC / Art. 138(1)(c) EPC)Claim interpretation (Art. 65.3 UPCA)Application to amend patentPerson skilled in the art

Documents

Revocation%20Action%20571669-2023%20Decision%20on%20the%20merits%20signed%20registry.pdf2024-11-05ENGLISH

Plain-English summary

NJOY Netherlands B.V. successfully revoked EP 3 498 115 B1 (Juul Labs International vaping device cartridge patent) before the Paris Central Division on grounds of added matter under Art. 138(1)(c) EPC / Art. 123(2) EPC. All of Juul Labs' twelve auxiliary amendment requests were rejected — most for failing to overcome the added matter defect, and auxiliary request (2)d additionally for being unclear, exceeding a reasonable number, and lacking supporting argument. The court confirmed that Art. 65(3) UPCA does not require evaluating partial allowability of amendment requests.

Accepted arguments

What the court agreed with — by party.

Patent EP 3 498 115 B1 invalid for added matter under Art. 123(2) EPC
ClaimantLegal basis: Art. 138(1)(c) EPC; Art. 123(2) EPC
Note: Paris Central Division (Section 1) found the patent added matter not disclosed in the parent application; all of Juul Labs' auxiliary requests to amend the patent were rejected.
Court may limit patent by amendment and revoke only in part under Art. 65(3) UPCA without being obliged to evaluate if amendment can be allowed in part
ClaimantLegal basis: Art. 65(3) UPCA; R. 50(2) RoP
Note: Court held Art. 65(3) UPCA pertains only to the granted patent; within an amendment application, a claim set is either allowable as a whole or not — there is no obligation to evaluate partial allowability.

Rejected arguments

What the court did not agree with — and why.

Auxiliary requests (2)a through (2)d to amend the patent to overcome added matter objection
RespondentLegal basis: R. 50.2 RoP; R. 30.1(c) RoP; Art. 65(3) UPCA
Reason: Most auxiliary requests rejected because the added matter defect was not overcome; auxiliary request (2)d was additionally rejected as unclear (no defined order for claim combinations), unreasonable in number (exceeding the 12-request limit treated as reasonable), and unsupported by argument.

Key legal principles

Doctrines and rules cited in the reasoning.

Added matter (Art. 123(2) EPC) as ground for revocation under Art. 138(1)(c) EPC Art. 65(3) UPCA applies only to granted patent; no obligation to assess partial allowability of amendment application Amendment claim set must be clear, precise, and reasonable in number (R. 50.2 RoP)Twelve conditional auxiliary requests treated as upper limit of reasonable number Claim interpretation is a question of law for the court, performable at any stage

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Claim construction notes

Claim interpretation identified as a question of law for the court at any stage of proceedings. The court construed the claims at issue to identify whether added matter was present by reference to the parent application European application 18000692.6.